Appeal No. 1998-1647
Application 08/668,503
the side edges of the bag would simply have been
obvious to an artisan, given that Ferguson is
already providing protection for 17½ inches of the
bag walls for the same reason. [Final rejection,
page 3.]
We have carefully reviewed the appealed claims,
appellants’ specification, the applied references, and the
respective viewpoints of appellants and the examiner. As a
consequence of our review, we conclude that the standing § 103
rejection is not sustainable.
Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177-78 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
In making such
a rejection, the examiner has the initial duty of supplying
the requisite factual basis and may not, because of doubts
that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. Id.
We fully appreciate that in Ferguson, the patch 8 is
sized such that it covers and protects a substantial portion
7
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